Your EIC here, emerging from litigation/writing lockdown to bring you this fashion law tidbit...

Recent reports of the Louboutin-YSL red-sole litigation's resolution appear to have been premature. As the document embedded below (and also available at Scribd.com) makes clear, the fight about the proper modification of the U.S. Patent and Trademark Office's registration of the red-sole trademark is still very much alive. Remember: just because a federal court isn't directly involved in a dispute doesn't mean the story has gone cold.

Page 35: Dec. 20, 2012 letter from the USPTO Office of the Solicitor, explaining to counsel for the parties that it plans to revise Louboutin's Reg. No. 3,361,597 to give effect to the Second Circuit's instructions via the following amendment (bold mine; new portion underlined): "... The mark consists of a lacquered red outsole on footwear that contrasts with the color of the adjoining remaining portion of the shoe (known as the 'upper')...."

Page 37: Jan. 4, 2013 letter from Louboutin's trademark registration counsel taking issue with the USPTO's proposed modification, and suggesting the following alternative: "... The mark consists of a lacquered red outsole on footwear that contrasts with the color of any visible portions of the shoe...."

Page 41: Jan. 8, 2013 letter from YSL's counsel urging the USPTO to adhere to its original proposed modification, and arguing that Louboutin's preferred language "would grant Louboutin the right to claim as infringing otherwise monochromatic red shoes (red soles with red shoes, but which feature, for example, a black heel cap or a gold buckle fastened on the toe [in contravention of] the intent of the Second Circuit."

Page 44: Jan. 14, 2013 letter from Louboutin's trademark registration counsel further arguing why the USPTO's original proposed modification would be problematic, in part by providing examples of non-monochromatic shoes that might not be covered by the trademark registration if the USPTO proceeds with its preferred modification -- due to the "adjoining" language and potential ambiguity about the meaning of the term "upper" in multi-part shoes:

[Ed. Louboutin's counsel does not satisfactorily address concerns, raised by YSL's counsel, that Loub's preferred language -- "a lacquered red outsole on footwear that contrasts with the color of any visible portions of the shoe...." -- might grant it exclusive rights over otherwise monochrome shoes that contain a single "contrasting" gold clasp, for example.

In any event, LOF finds this entire exchange troubling, because it is reminiscent of patent prosecution -- how much must be eliminated from a would-be patent's scope in order to make sure the claimed invention or design is actually "novel"? -- rather than the fundamental trademark infringement question of consumer association. LOF submits that this dispute reflects the disturbing tendency to let patent-type monopolistic thinking bleed intro trademark law -- trademarklawpocalypse! -- and that this situation could have been avoided if the Second Circuit had meaningfully engaged with the difficult-but-important "aesthetic functionality" issues posed in this case (as District Court Judge Victor Marrero boldly did), rather than opting for a questionable, middle-of-the-road "secondary meaning" analysis. More on this in a forthcoming article (maybe even a book) by yours truly....]

Page 49: Jan. 16, 2013 letter from the USPTO Office of the Solicitor to counsel for the parties (1) stating that "Louboutin's preferred wording deviates substantially from the [Second Circuit's] mandate," and (2) explaining the conclusion that the USPTO's amendment, as originally proposed, properly gives effect to the Second Circuit's order, but (3) postponing entry of this amendment until Feb. 4, 2013 -- three days after the new Feb. 1st deadline for the parties to restore jurisdiction to the Second Circuit to consider any remaining arguments in this case, and giving the parties time to seek clarification from the Second Circuit on its intentions regarding modifications to Louboutin's registration.

[Like everything on LAW OF FASHION, this post is for entertainment and informational purposes only, and does not constitute legal advice or create an attorney-client relationship among any individuals or entities. Any views expressed in this post or at the linked web pages are those of the relevant writer(s) on a particular date, and should not necessarily be attributed to this writer, his law firm, its agents, or its clients. Neither LAW OF FASHION nor any person or entity associated with it can or will warrant the thoroughness or accuracy of the content here or at the cited sources.]

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